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Monday, 14 January 2013

When he posted "The IPKat and his Blogging Friends -- a 2013 Round-up", here, last week, this Kat concluded with a call for new bloggers, or at least aspiring bloggers to stand up and make themselves known. One such gallant soul to do just that is Sean Gilday, a trainee patent attorney at Page Hargrave, Bristol, who has served time as an examiner at the UK Intellectual Property Office. The following is Sean's take on a decision of the Enlarged Board of Appeal at the European Patent Office that struck his attention:

An Appeal on the Ground of Irrationality

In response to Jeremy's recent call-to-arms for more blog contributors, I decided to chip in with a short article about a recent decision by the Enlarged Board of Appeal (BoA) at the EPO. I say "I" and not "this Kat", since I'm not a member of the
blogging team (additionally, the anagramised versions of some of my attributes -- "I'm a CPA student" and "used to be a Civil Servant" become "stupid cat name" and "never debut via cat alias" respectively -- lead me to believe that something sidereal dictates that I shouldn't...). However, I will do my best!

The case is R 0019/1and it concerns, inter alia, Art. 112a of the European Patent Convention (EPC), which contains the grounds upon which a party adversely affected by a decision of the Board may appeal against that decision.

The decision in question was T 284/10, in which the Technical BoA dismissed an appeal by The Gates Corporation ('Gates') following the maintaining of a patent as granted. Gates was one of three opponents to the patent, the opposition of all parties having been rejected by the Opposition Division. After the Technical BoA dismissed the appeal against the rejection of the opposition in oral proceedings, Gates appealed and cited the grounds recited in Art. 112a EPC, namely that a fundamental violation of Art. 113 EPC had occurred --the right to be heard.

Following a communication in the summons to oral proceedings, in which Gates was informed that the petition may be found “clearly unallowable”, Gates wrote back in a letter of 3 September 2012, asking the Enlarged BoA to consider in its decision the grounds of irrationality, also known as 'Wednesbury Unreasonableness' as established in Associated Provincial Picture Houses v Wednesbury Corporation[1948]. This ground is an interesting feature of English case law, in which a decision by an authority may be subject to a judicial review on the ground that it was “so unreasonable that no reasonable authority could have decided that way”. An example of such a decision was given in Lord Justice Warrington in Short v Poole Corporation [1926] as ‘a red-haired teacher being dismissed because she had red hair’.

However, the Enlarged BoA was quick to nip this argument in the bud. In paragraph 2.4 of its Reasons of the Decision, the Board stated unequivocally that the grounds for appeal enumerated in Art. 112a constitute an exhaustive list: it was totally uninterested in incorporating anything analogous to the judicial review ground of irrationality (if nothing else, the sheer deluge of potential litigation to which such a move would expose the EPO would appear to prohibit this merely for reasons of pragmatism).

So this result was entirely expected. As the decision points out in its penultimate paragraph, this principle has been pretty thoroughly established in the case law of the BoA. Petitioners attempting to introduce additional grounds to those strictly recited in Art. 112a are likely to leave disappointed".

This Kat thanks Sean for his effort. With a bit of luck and some encouragement, he may pop up again, on this or other blogs, in the not-too-distant future. Merpel adds: if Sean can do it, perhaps you can too ...

7 comments:

A lot of interesting things happen at the periphery of case law where desperate arguments are concocted by imaginative attorneys. There's an art and a skill as to how to do an impossible case, and to doing lots of them without becoming ground down in the process. Hats off to the Gates team for trying their best.

The blog referred to by MaxDrei reports a further interesting T decision, T 569/08, and the refusal to the board to admit an auxiliary request comprising a combination of claims searched by the examiner but not one of the requests considered by the examining division.

http://k-slaw.blogspot.de/2012/12/r-1911-forget-wednesbury.html

It seems the boards are taking the view that the raising the bar exercise gives them the chance to slap down anyone who might make their life unnecessarily tiresome.

"Even a combination of claims of the application as filed may be disregarded in appeal proceedings (see paragraphs [4] to [6])."

p.s. interestingls, it appears that this case went through an earlier appeal with the examining division rectifying its decision through interlocutory revision and then proceeding to refuse the application again. An abuse of procedure?

p.s. interestingls, it appears that this case went through an earlier appeal with the examining division rectifying its decision through interlocutory revision and then proceeding to refuse the application again. An abuse of procedure?

I would appreciate an explanation as to why should this represent an abuse of procedure.

Re abuse of procedure - if I was the applicant and had an application returned to the examining division through interlocutory revision (at the cost of an appeal fee) I would be sorely upset if the same division then went on to refuse the application costing me another appeal fee. In my opinion, if the examining division should only grant interlocutory revision if the application is considered allowable and is willing to issue a communication pursuant to Rule 71(3).

@Anon 09:07 - Interlocutory revision (A 109 EPC) requires that the examining division finds that the appeal is admissible and well founded, so that the decision must be set aside. This may occur, for instance, because the applicant has made amendments that overcome the grounds for refusal, or because a substantial procedural violation occurred. In the latter case, the ED can also order the reimbursement of the appeal fee (see Guidelines, E-X, 7.3). There's nothing in A 109 EPC that prevents the division to refuse the application again, either on different grounds or because the substantial procedural violation has been remedied. Neither case would represent an abuse of procedure, it's rather how the procedure is supposed to work.

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